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Monday, 29 August 2011

L'Oréal SA v eBay International AG, Court of Justice of the European Union, Case C-324/09, 12 July 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr144, first published online: 25 August 2011

The Court of Justice of the European Union (‘ECJ’) has provided clarification on the liability of companies operating internet marketplaces for trade mark infringement committed by users, holding that, in certain circumstances, the operator may be liable for trade mark infringement as a result of the postings of its users. National courts must be able to order those companies to take measures intended not only to bring to an end infringements of IP rights, but also to prevent further infringements of that kind.

Legal context

Directive 89/104 (the ‘Trade Marks Directive’) and Regulation No 40/94 (the ‘Trade Marks Regulation’) were repealed and replaced by Directive 2008/95 and Council Regulation 207/2009. However, by virtue of the material dates in this dispute, it continues to be governed by the Trade Marks Directive and the Trade Marks Regulation.

Article 5 of the Trade Marks Directive and Article 9 of the Trade Marks Regulation deal with the rights conferred by a trade mark.

Article 14(1) of Directive 2000/31 (the ‘E-Commerce Directive’) restricts the liability of service providers in relation to the ‘hosting’ of information provided by the recipients of its services.

Article 11 of Directive 2004/48 (the ‘Enforcement Directive’) provides that Member States must ensure that rights holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an IP right, as well as against infringers.

Facts

L'Oréal brought proceedings against eBay and a number of its users in various Member States, including before the High Court of England and Wales, alleging widespread infringement of its IP rights on eBay's European websites. In particular, L'Oréal sought a ruling that:

by purchasing keywords corresponding to the names of L'Oréal trade marks from paid internet referencing services (such as Google AdWords), eBay directs its users towards goods that infringe L'Oréal's trade marks which are offered for sale on its website; and

even if eBay was not liable for the infringements of its trade mark rights, L'Oréal should be granted an injunction against eBay by virtue of Article 11 of the Enforcement Directive.

In May 2009 Arnold J held that eBay was not liable as a joint tortfeasor for acts of trade mark infringement, through the sale of infringing products by its users, despite there being, in the judge's opinion, more that eBay could have done to prevent such sales from occurring. However, the judge felt that he could not make a decision as to whether eBay was liable for trade mark infringement as a result of its use of sponsored links on third party search engines and its own site, insofar as they lead people to postings for infringing products, without a reference to the ECJ. Guidance was also sought as to whether sales of testers and unboxed goods constituted trade mark infringement, as well as to the scope of injunctive relief available under Article 11 of the Enforcement Directive.

In December 2010 the Advocate General issued an Opinion that eBay was not liable for the trade mark infringements of its customers, but could become so if it failed to take further action once notified of the infringing use and the use continues or is repeated. Further, under Article 11 of the Enforcement Directive, injunctions may be available against marketplace operators such as eBay in order to prevent continued or repeated infringements by the same user in relation to the same trade mark.

The ECJ gave its decision on 12 July 2011.

Sale of infringing products
The ECJ stated that the proprietor of a trade mark may rely on his exclusive right as against an individual who sells trade marked goods online only when those sales took place in the context of commercial activity.

EU trade mark rules apply to offers for sale and advertisements relating to trade marked goods not previously marketed within the EEA with the proprietor's consent as soon as it is clear that those offers for sale and advertisements are targeted at consumers in the EU. It is for national courts to assess whether there are any factors on the basis of which it may be concluded that an offer for sale on an online marketplace is targeted at consumers in the territory covered by the trade mark.

The ECJ found that, in the absence of evidence to the contrary, testers and other sample products provided to distributors free of charge and marked ‘not for sale’ are not ‘put on the market’ within the meaning of the Trade Marks Directive or Trade Marks Regulation.

Further, the proprietor of a trade mark may, by virtue of the exclusive right conferred by the mark, oppose the resale of luxury goods on the ground that the reseller has removed their packaging, where the consequence of that removal is that essential information, such as information relating to the identity of the manufacturer, is missing. Where the removal of the packaging has not resulted in the absence of that information, the trade mark proprietor may nevertheless oppose the resale of an unboxed perfume or cosmetic product bearing his trade mark, if he establishes that the removal has damaged the image of the product and, hence, the reputation of the trade mark.

Infringement by use of sponsored links
The ECJ considered the proper construction of Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the Trade Marks Regulation. It held that a trade mark proprietor is entitled to prevent an online marketplace operator from advertising for sale goods bearing its trade mark using a keyword which is identical to the trade mark, where that advertising does not enable reasonably well-informed and observant internet users to ascertain (easily) whether the goods concerned originate from the proprietor of the trade mark or from a linked business or, on the contrary, originate from a third party.

Insofar as eBay used keywords corresponding to L'Oréal trade marks to promote its own services as an online marketplace, that use was not made in relation to goods or services identical or similar to those for which the trade mark is registered. However, use by eBay of keywords corresponding to L'Oréal trade marks to promote its users' postings is use in relation to identical goods or services. That use is not just by the eBay users, it is also by eBay itself in order to promote goods which its customer is marketing with the assistance of that service, where the use is such that a link is established between the sign and the service.

Infringement by use of signs corresponding to trade marks on the website of an online marketplace operator
Insofar as an operator of an online marketplace merely enables its customers to display signs corresponding to trade marks on its website in the course of their commercial activities, it does not itself ‘use’ those signs. That use is made by its customers. Accordingly, the role of the online marketplace operator in enabling the use made by its customers must be examined by reference to laws other than trade mark law.

Article 14(1) of the E-Commerce Directive restricts the liability of service providers in relation to the ‘hosting’ of information provided by the recipients of its services. The ECJ has previously held that this Article applies to the operator of an online marketplace where that operator has not played an active role that would allow it to have knowledge or control of the data stored.

While it is for national courts to carry out the assessment concerned, the ECJ considered that the operator plays an ‘active role’ which gives it knowledge of or control over the data relating to the offers for sale when it provides assistance such as optimizing the presentation of the online offers for sale or promoting those offers. When the operator has played an active role of that kind, it can no longer rely on the exemption from liability which Article 14(1) confers.

Moreover, even where the operator has not played an active role of that kind, it cannot rely on that exemption if it was aware of facts or circumstances on the basis of which a diligent economic operator should have realized that the online offers for sale were unlawful and, in the event of it being so aware, failed to act promptly to remove the data concerned from its website or to disable access to it.

Injunctions against the operator of the online marketplace
The final question referred to the ECJ was whether Article 11 of the Enforcement Directive requires Member States to afford the proprietors of IP rights with the right to obtain an injunction against operators of websites by means of which their rights have been infringed, such as an online marketplace, requiring that operator to take measures to prevent future infringement of those rights.

The ECJ held that, when an operator of an online marketplace does not itself decide to end infringements of IP rights and to prevent further such infringements occurring, that operator may be ordered to take measures making it easier to identify those customers responsible. Although it is necessary to respect the protection of personal data, when the perpetrator of the infringement is operating in the course of trade, not in a private matter, that person must be clearly identifiable. Consequently, the ECJ found that EU law requires Member States to ensure that national courts are able to order a website operator to take measures which contribute not only to bringing to an end infringements, but also to preventing further infringements. Those injunctions must be effective, proportionate, and dissuasive and must not create barriers to legitimate trade.

Analysis

This is a strong decision in favour of brand owners, as it places a much higher burden on online marketplace operators to police the content of their users' postings. Further, it endorses and applies the reasoning in Google France (Joined Cases C-236/08 to 238/08) in finding that liability for an online service provider is only triggered by advertising for sale goods bearing a trade mark, where that advertising does not enable a well-informed and observant internet user to understand if goods originate from the trade mark proprietor (or a linked business) or from a third party.

The issue will now be over the scope and breadth of the injunction that courts are prepared to grant. The ECJ has recognized that this is a matter for national law, but it remains to be seen whether Member States will apply this in a consistent manner.

Practical significance

Online marketplace providers can no longer hide behind the ‘hosting’ defence/exception to liability provided by Article 14 of the E-Commerce Directive to maintain that they do not have legal responsibility or liability for the acts of their users if they have:

played an active role in the promotion or sale of the trade marked goods; or

gained knowledge of facts or circumstances which should have put them on notice that the offers for sale were unlawful and they failed to act expeditiously.

Further, injunctions will now be available against future as well as past infringing activity on online marketplaces. We can expect further developments in the move by rights holders to prevent file-sharing by the users of major ISPs (such as proceedings between the MPA and BT concerning Newzbin) [Editor's note: on the Newzbin litigation, which was decided after this article went to print, click here].

Although the UK has not adopted specific rules to implement Article 11 of the Enforcement Directive in full, the High Court nevertheless will have to abide by the full text of Article 11 when granting an injunction and can injunct intermediaries such as marketplace operators. The injunctions must be effective, proportionate, and dissuasive—which may not be straightforward for the Courts to ascertain.

Friday, 26 August 2011

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr145, first published online: August 25, 2011

The Patents County Court for England and Wales, demonstrating just how inaccurate its name really is, provides clear discussion of various aspects of unregistered design right protection under the Copyright, Designs and Patents Act 1988.

Legal context

The unregistered designs system in the UK is a relatively under-appreciated part of the weave that makes up the domestic IP regime. Residing in Part III of the Copyright, Designs and Patents Act 1988 (the Act), the unregistered design right (UDR) occupies the hole dug by section 51 (which renders copyright in designs (etc) for anything other than an artistic work unenforceable against articles made to the design). The plug formed by the UDR finds basis in section 213 of the Act. This states that the right may subsist in ‘the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’, subject, that is, to a number of other requirements and exclusions. The extent of some of these gatekeepers of subsistence, and the manner of approaching questions of infringement of the UDR, is explored in detail in the Nampak decision.

Facts

Section 213 of the Act, as noted, provides protection for the design of the shape or configuration of ‘articles’. The ‘article’ in this case was a packaging carton for a tortilla-style wrap.

The carton was designed by Adrian and Jeremy Weintroub, the sole shareholders of Albert Packaging Ltd, in 2005. As the Judge explained (at [43] of his judgment), ‘the carton has a rectangular base and vertical flat sides. The front consists of a vertical panel and then an angled panel sloping backwards to meet the rear panel at an angle. In the middle of the front, straddling the vertical panel and the sloping panel, is a transparent window’. A plan view is below. It was manufactured and supplied to Sainsbury between 2006 and 2008. However, at some point in 2008, Sainsbury moved supplier to the defendant (Nampak).

The claimants alleged that Nampak's product was an infringing copy of their design. Nampak, for their part, denied this and also challenged subsistence of the UDR, arguing that the Weintroubs' design was excluded from protection under section 213(3) and was also commonplace in the design field in question.

Analysis

Section 213 of the Act allows for UDR to be claimed in ‘any aspect of the shape or configuration … of the whole or part of an article’ (emphasis supplied). As Judge Birss noted, this facet of the system was ‘why the pleadings in design right cases take on such importance’. Accordingly, the claimants had defined the design in which they claimed UDR in three ways:

‘The shape of the carton in assembled form;’

‘A generally rectangular box save in that the top face slopes downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face;’ and

‘The distance from the shoulder of the pack to the top of the back panel, along the back panel, is 35 mm regardless of the length or width or depth of the pack.’

The defendant argued that the asserted designs were barred from protection by section 213(3)(a) of the Act: the exclusion for methods or principles of construction. The judge adopted the established approach (see, eg Landor & Hawa International Ltd v Azure Designs Ltd [2007] FSR 9) explaining (at [22]) that ‘[t]his exclusion operates to limit the level of generality at which a definition of the design to be relied on can be stated: the more abstract the definition relied on, the more likely it is to fall foul of the exclusion’.

Turning to the claimants' pleaded designs, the judge explained that the third in the above list was plainly excluded under this provision:

[54] … To give the claimants a monopoly in a single dimension … regardless of the length depth or width of the pack and regardless of the presence or shape of a window is too general. … [It] is a concept which allows for all kinds of appearances to be made within it … [which] produce very different appearances from each other and from the existing Albert Packaging product. Thus approach (3) is excluded by s213(a).

The claimants' second embodiment fared no better. Despite its being narrower in scope, the judge still considered that it was ‘nothing more than a definition of concept rather than a definition of a design with a specific, individual appearance’. Accepting this as a legitimate subject for UDR would have given the claimants a ‘monopoly akin to a patent monopoly (albeit limited to cases of copying) in any pack which satisfied that definition’. This was plainly not acceptable. Accordingly, it was also excluded under the provision.

The defendant had also challenged the designs on grounds that they were commonplace in the design field in question—thereby contravening section 213(4). The judge first addressed the design field: was it limited to boxes for wraps?

He thought not. ‘[W]hat matters are the sort of designs with which a notional designer of the article concerned would be familiar.’ There being ‘no such thing as a wrap box designer’, the designer of a carton for a wrap would be drawn from carton manufacture in general and would set their sights accordingly.

With this in mind, the judge explained that the claimants' second and third designs were clearly commonplace—these aspects of shape and configuration were expressed at a level of generality that was widely used in the field of carton design as a whole. This conclusion was reinforced when other, unconnected, designs in the field were examined: ‘[D]esigners working independently have used the same basic elements and have mixed and matched them as they see fit.’

However, the first-pleaded design—‘The shape of the carton in assembled form’—was ‘a different matter’. To declare this commonplace would ‘deny packaging designers any design right at all’, and would completely fail to recognize the skill they employ in their work. Accordingly, UDR subsisted in the particular combination of elements making up the design of the entire carton.

But was it infringed? Judge Birss considered that the correct approach to infringement under section 226 was essentially two-pronged. First, consider whether the ‘similarities between the Nampak product complained of and the Albert Packaging design (as well as the possibility of access) call for an explanation’. In other words: could an inference of copying be made? If so, this called for an objective comparison of the design in order to see if the defendant's article had been produced exactly or substantially to it. The judge also explained that functional features of the cartons could conceivably be similar because they were performing their function and not because of copying.

On the facts, the judge stated it to be ‘clear why a complaint was raised in these circumstances’—the opportunity to copy evidently existed and the cartons, in broad terms, were ‘clearly very similar’, albeit not identical. Moreover, the similarities could not be explained away as products of function. This plainly required explanation.

The explanation provided was that the defendant's design derived from documents created in 2005, ie the year before the claimants' design went to market. Despite their authenticity being challenged, the judge considered these documents genuine and accordingly there could be no question of copying in relation to them. The standout feature of the defendant's most recent design (created in 2009), which was shared by that of the claimants, was the sloping top face with the window partly on the slope and extending onto the front. However, rather than being a result of copying, the court considered that the defendant's article looked like this because it was based on their own, independently created, 2005 design. Accordingly, the only aspect of any article that was derived from the claimants was the specific shape of the side panel. Looked at as a whole, this did not amount to infringement: the defendant had not produced an article substantially to the claimants' design.

Practical significance

If nothing more, this decision serves to highlight the importance of maintaining a paper trail of design development documents. Were it not for the authenticity of Nampak's 2005 designs, the outcome could have been very different indeed. The case also demonstrates the fundamental weakness (from a claimant's point of view) of the UDR system—the need to prove derivation. Especially in the field of functional designs, the area that the UDR was arguably created to cater for, the fact that similarities could just as easily be products of function as of copying provides a significant chink in the protection offered. This said, stronger monopoly rights are correctly reserved for systems of registration—an avenue that may, in retrospect, have been worth the Weintroub brothers pursuing when they created their carton in 2005

Reviewer: Christopher Wadlow (Professor of Law, UEA Law School, University of East Anglia, Norwich, England)

I must confess to having indulged in a certain amount of hyperbole when I wrote in a previous issue of this Journal that the editors of Terrell on the Law of Patents, then in its 16th edition, could ‘trace their succession back in line unbroken to … the first edition of 1884’(1). There have in fact been two successive editorial dynasties, the first having been founded by the eponymous Thomas Terrell QC in 1884 and the second by KE Shelley KC in the 1950s.

The life of Thomas Terrell himself makes surprisingly lively reading for those who have known only the recent generation of editors (2). Born in Paris in 1852, Thomas Terrell may originally have intended to follow a career as a chemist or mining engineer,(3) but took to journalism instead, a role which he briefly revisited when he attended the second court-martial of Captain Alfred Dreyfus in 1899.4 On being called to the bar in 1879 he joined Gray's Inn, and was subsequently made a QC (1895), a Bencher (1896), and Treasurer (1904). His early practice was varied, and if he seems to have found his natural milieu in the divorce courts, most notably as counsel for the plaintiff in the final act of the long-running cause célèbre known as Wiedemann v Walpole,(5) then it is perhaps coincidental that matrimonial relations of the conventional kind were somewhat of a rarity in the Terrell household. It was said of Thomas Terrell and his father that ‘both made unhappy marriages in their twenties, both engaged lustfully in haphazard womanising and both, in their forties, became passionately involved with a mistress’.(6) He was also a published novelist,(7) and the inventor of an improved gas-mantle.(8)

Patna High Court

Thomas Terrell was succeeded by his second son Sir Courtney Terrell, who was Chief Justice of the Patna High Court from 1928 until his death in 1938, and between them they edited six of the first seven editions, with an interregnum for the 3rd edition of 1895, and another for the 8th edition of 1934. A memoir of Sir Courtney Terrell, by the latter's son, Richard Terrell, provides some additional insights into the life and character of the biographer's grandfather. Thomas Terrell was the offspring of a liaison between Thomas Hull Terrell, an ostensibly respectable barrister (and future county court judge) and his ward Elizabeth Spry, who had been entrusted to his care when her father, an Indian Army officer, left England to join his regiment in Madras. He died en route. In 1852 Elizabeth, by now pregnant, was bundled off to Paris where she gave birth to Thomas fils. The boy grew up speaking French, and professing a characteristically Gallic brand of politics: revolutionary, egalitarian, democratic, and anti-clerical.(9) His novel Lady Delmar allowed him to display his leanings towards the avowedly Marxist values of the Social Democratic Federation,(10) but it was as a Gladstonian Liberal (of the Radical wing of the party) that he unsuccessfully contested four general elections.

With Sir Courtney Terrell, the family succession came to an end, and after a decently prolonged interval, a second (unrelated) dynasty was founded by KE Shelley KC with the 9th edition in 1951. Terrell has continued to be edited in the same chambers ever since—its successive editions serving as a rite of passage for junior barristers eager to demonstrate their worthiness to ascend the silken ladder at 3 New Square, or 6 Pump Court before it. For the rest of us, the same successive editions have seemed (at times) to have offered little more than a handsome and expensive binding for the text of the Patents Act of the day. Readers of past editions will recall countless occasions on which counsel would say: ‘My Lord will find section X of the Act at page Y of Terrell’, with the clear implication that if My Lord were perverse enough to look for section X anywhere else, even in the Queen's Printer's copy, then the text would very probably turn out to be corrupt, if not altogether spurious.

So much for the past. The commentary has been greatly extended for the present edition, and the appendices cut back accordingly. More importantly, the editors seem to have been asking themselves some fundamental questions about what Terrell is really for. The winds of change have made their presence felt, and just as Great Britain has found itself bereft of the Empire which Sir Courtney Terrell served as a judge, so the editors of Terrell must have had cause to wonder about their own future role and relevance. In its own dignified fashion, Terrell has been adjusting itself to the new ways since the 13th edition of 1982, but the need to adapt to a new environment has intensified, as the Preface candidly acknowledges:

While the principal focus [of Terrell] remains the law as practised and applied in the courts of this country, there is an ever-increasing willingness on the part of our courts to follow the decisions of the Boards of Appeal of the EPO and, where appropriate, we have cited settled jurisprudence from that source.

With this promise in mind, it may come as something of a surprise that the table of Board of Appeal decisions in Terrell actually occupies no more than two facing pages, compared to nearly 45 pages tabulating the decisions of the UK courts. Butterworths’ Modern Law of Patents,(11) in comparison, takes all of 20 pages to list the Munich case law. The Boards of Appeal, however, can at least consider themselves generously served by Terrell in comparison to the dearth of cases from other common law jurisdictions. The commentary itself remains as firmly centred on the English case law as ever.

Might it therefore be suggested of Thomas Terrell's distant successors that their performance fails to match up to their promises? In his lifetime, Terrell himself unsuccessfully defended Frederick Roe and his notorious Carbolic Smoke Ball Company.(12) He later (but with equal lack of success) prosecuted the fraudulent Cornelius Bennett Harness, the promoter and managing director of the Medical Battery Company, of Oxford Street, London W1. The latter's ‘electropathic belts and corsets’, though patented in the UK and USA,(13) and advertised as being ‘scientifically constructed … for new life and vigour’,(14) were therapeutically useless, as Terrell's client, an ‘aged and decrepit’ retired Indian Army Colonel living in Margate, discovered to his cost.(15) Of the Colonel's unrelieved affliction, delicately referred to as a ‘weakness of the loins’, suffice it to say that nothing of the sort seems to have troubled Terrell, who continued to be productive in that department well into the twentieth century. He married his French mistress, Clementine Bouriel, shortly after the death of his wife Emma in 1924, thereby legitimating the seven offspring from that side of his family, to which should be added the three more regularly accounted for by his first marriage.

As always with patent claims, not to mention advertisements proffering dubious ‘guarantees’, for even more dubious ‘miracle cures’, it is important to pay attention to the precise wording: in this case ‘practised and applied’, ‘in the courts of this country’, ‘where appropriate’, ‘settled jurisprudence’. Terrell is not just unapologetically Anglo-centric, it is almost entirely court-centred. Unlike The Modern Law of Patents, in particular, Terrell has no pretensions as a source of reference for patent office practitioners (whether in Newport or Munich), and the Munich case law is expressly included for its relevance to UK law and practice, rather than for its intrinsic importance. Does all this mean that Terrell's editors have failed to deliver on what they promised? I think not, since Terrell holds up a faithful mirror to what has been the policy of the Patents Court since the days of Falconer and Aldous JJ, both editors of Terrell themselves. They (and Terrell) have done their best to see that English law has marched to the same tune as European law, but not to the extent of slavishly following in anyone else's footsteps.

It also follows that topics which are of high importance in examination, but of relatively low importance post-grant (such as office procedure, added matter, impermissible amendment, clarity, and fair basis of claims) are dealt with rather briefly, and attention is concentrated on issues which tend to dominate English patent litigation. This is not to say that any of the former are completely ignored, but they are not really part of Terrell's intended franchise. Practitioners whose interest in patents is non-contentious will also find that Terrell has relatively little to offer beyond a new chapter on Entitlement, where there has been a minor surge of decided cases. In all these respects, Terrell is much less wide-ranging than The Modern Law of Patents, and sticks more closely to the needs and interests of UK patent litigators.

The comparison with The Modern Law of Patents is most clearly in Terrell's favour when one comes to its chapters on claim interpretation, infringement, and the skilled person, as the wearer of the new-found unisex mantle has now become. The attributes of this surprisingly elusive character are absolutely fundamental (sorry) not only to claim interpretation (and therefore to both novelty and infringement), but also to obviousness, and even to insufficiency, so it makes eminent sense to devote a whole separate chapter to them, which the new edition of Terrell does very successfully.

When it comes to claim interpretation and infringement, Terrell gives more generous measure than The Modern Law of Patents, since the latter is disadvantaged by the negligible amount of EPC case law in point, and the very limited relevance of what little there is outside examination and opposition proceedings. Article 69 is equally applicable in Munich as in London, of course, but it is one measure of the difference between office practice and litigation that claim interpretation is often the determinative factor in the latter, whereas it is hardly ever so much as a side-issue in the former. Likewise, The Modern Law of Patents seems rather too willing to assume that Kirin-Amgen(16) has obliterated the legacy of Catnic(17) and Improver(18)from our law, whereas Terrell contains a much fuller treatment of the Catnic (and even pre-Catnic) case law in all its variants. For the time being, at least, this is surely the safer option, and probably the correct one, since whatever the merits or demerits of purposive construction in the mould of Catnic and Improver, the latter do at least represent a very necessary attempt to provide a structured and accessible way of applying Article 69 EPC and its Protocol to the facts of individual cases.

The new chapter on the skilled person apart, the present edition has added entirely new chapters on Supplementary Protection Certificates, Entitlement, and Declarations. Likewise, the principal grounds of invalidity (novelty, obviousness, and insufficiency) have been disaggregated from the former single chapter on grounds of revocation, and given individual chapters of their own. Another sensible decision has resulted in the former treatment of stamp duty and income tax being omitted, though the table of contents continues to promise otherwise in the title of Chapter 23.

If Thomas Terrell's marital unorthodoxy, political radicalism, and religious scepticism barred him from promotion to the very highest reaches of the legal profession, then I can hardly imagine that he was very much bothered. On one version of events, he could have been a judge for the asking, but turned the opportunity down. According to his grandson Richard: ‘Tom [Terrell] had been a drinking companion of [Lord] Birkenhead and there is a story of how, one moonlit night in Pall Mall, Birkenhead put his arm round Tom's shoulders and said, “Tom, I'm going to make you a judge.”’ Terrell, who must have been approaching 70 at the time, is supposed to have declined, both on an account of his age, and because of his irregular family arrangements.(19)

Be that as it may, Thomas Terrell's life story is surely one which most of us would be more than happy to contemplate in old age, with feelings of contentment verging on complacency, and complacency verging on conceitedness. Even the most trivial of his documented achievements—that of winning a silver cup for riding a penny-farthing bicycle from London to Brighton(20)—is suitably memorable. I very much doubt if he would have swapped destinies with Sir Douglas Falconer,(21) for example, though he might have been tempted by the prospect of changing places with Sir John Mortimer. How does he deserve to be remembered? For want of anything better, I append my own belated and inadequate attempt at a suitable epitaph:

It is hardly Thomas Terrell's fault that the most illuminating of his monuments should have been as delicate as a fairy's mantle, and as evanescent as the use of gas for domestic illumination, nor that the most durable should have turned out to be more leaden than brazen.

Footnotes

1 CM Wadlow, ‘Butterworths’ Book of Sand’ (2011) JIPLP 194.

2 For an obituary of Thomas Terrell (1852–1928) see The Times (Monday, 30 April 1928) p 19. Further information from Richard Terrell, The Chief Justice: A Portrait from the Raj (Michael Russell, Salisbury 1979), (1928) 3 Greya (Michaelmas Term) 8, www.balean.net/terrell.html, and miscellaneous sources.

3 Details of Terrell's education vary. According to The Times, above n 2, he obtained a first class degree from the Ecole des Mines, and intended to practise as a mining engineer. However, a potted biography published by the same newspaper in 1892 states that he was educated at Berkhampstead Grammar School and at the Royal College of Chemistry, and intended to pursue a career as an analytical chemist: The Times, (Wednesday, 6 July 1892) 13. Yet another version has him attending the Jewish School at Ramsgate: The Western Mail (Saturday, 1 July 1893). (The Welsh connection is that Terrell practised on the South Wales Circuit.)

4 In which capacity the New York Times described him as ‘One of the leading jurists in England’ New York Times (20 August 1899).

5 Wiedemann v Walpole [1891] 2 QB 534 (CA). There were three trials in all, arising from a promise of marriage supposedly made by the Hon. Robert Horace Walpole, heir to the Earldom of Orford, to Valerie Wiedemann, a German governess whom he seduced and impregnated in Constantinople. Fräulein Wiedemann pursued the Hon. Arthur back to England, where she continued to importune him after his marriage to an American railway heiress. For the third and final trial, see The Times (Tuesday, 16 June 1891) 3, and for the appeal which ended the litigation see The Times (Thursday, 30 July 1891) 3.

6 Terrell, The Chief Justice (1979), at 17. Sir Courtney Terrell, the Chief Justice of the book's title, continued the family tradition by setting up house in India with his estranged wife's elder sister.

7 Lady Delmar (1891, with Miss TL White); The City of the Just (1892); A Woman of Heart (1893). The City of the Just was avowedly written to warn the public against City frauds, ‘bucket shops’, and bogus speculative companies, but The Times acidly observed that ‘such interest as it attracted was chiefly due to the satirical exposure of the foibles of the Judges, which probably did not improve the (never very cordial) relations existing between Terrell and the Bench’. The Times, n 2, above.

10 ‘[T]he chief characteristic of this work lies in its exposition of Social Democratic theories … [I]t tells a story of a woman's weakness and a man's treachery, the man, an aristocrat, being thoroughly villainous, while virtue appears to be looked upon as the peculiar attribute of the less favoured classes.’ The Morning Post (London, Wednesday, 4 March 1891) 2.

15 A Brian Simpson, Leading Cases in the Common Law (OUP, Oxford 1995) at 286. See also The Times, (Thursday, 23 November 1893) 11; (Thursday, 1 February 1894) 8. The company failed, and was wound up shortly afterwards: Re Medical Battery Company [1894] 1 Ch 444. A doctor, Joseph Richard Leeson, who had lent his name and assistance to Harness, was struck off for ‘infamous conduct’: Leeson v General Council of Medical Education and Registration (1890) LR 43 ChD 366, CA.

The printed version of the September 2011 issue of the Journal of Intellectual Property Law & Practice has been posted and subscribers should be receiving their copies any moment, if they have not already done so. The electronic version has been available online since 10 August.

Whether you subscribe to the electronic version or not,

you can check out the contents of each new issue on the JIPLP website here and

Friday, 19 August 2011

The Journal of Intellectual Property Law and Practice(JIPLP) is pleased with initial responses to the new regime for reviewing intellectual property books, which you can find explained on this weblog here. So far, most of the books that have been offered for review have been snapped up by a mixture of practising lawyers and academics and we look forward to receiving their reviews soon.

The following books are still in search of a reviewer. If you are interested in reviewing one for the journal, please email Sarah Harris (sarah.harris@oup.com) and let her know why you feel that you're the right person to review it. You should have a reply by not later than Thursday 8 September.

'Expert Privilege' in Civil Evidence. This title has been written by regular JIPLP contributor Paul England, now with law firm Simmons & Simmons LLP. It is published by Hart Publishing and its details can be inspected on its web page here. The ideal reviewer would either be a litigation lawyer or someone in academe who has had some experience of (or is researching in) IP litigation -- though privilege affects non-contentious practice too.

"This book approaches 'expert privilege' as a subcategory of privilege of its own. This is not because it is defined by a uniform subset of rules that apply to all situations in which expert material is at issue, but precisely because it is not. Neither can assumptions about privilege in expert evidence be based on other areas of application. Instead, 'expert privilege' is a highly idiosyncratic and problematic area. None of the traditional privilege texts are dedicated to this important subject. A book dealing with 'expert privilege' as a subject area of its own is therefore highly overdue. This is the first such book".

Intellectual Property Overlaps: A European Perspective, by Estelle Derclaye and Matthias Leistner. Published by Hart Publishing, further particulars are available from the publisher's website here.

"... This book's aim is to find appropriate rules to regulate overlaps and thereby avoid regime conflicts and undue unstructured expansion of IPRs. The book studies the practical consequences of each overlap at the international, European and national levels (where the laws of France, the UK and Germany are reviewed). It then analyses the reasons for the prohibition or authorisation of overlaps. This analysis enables the determination of criteria and principles that can be used to (re)map the overlaps to achieve appropriateness and legitimacy".

Cultural property law and restitution: A commentary to international conventions and European Union law,by Irini A Stamatoudi, and brought out by Edward Elgar Publishing. This book's website contains further information here. According to the publisher,

"Theories of cultural nationalism and cultural internationalism and their founding principles are explored. Irini Stamatoudi also draws on soft law sources, ethics, morality, public feeling and the role of international organisations to create a complete picture of the principles and trends emerging today".

Concise European Trade Mark and Design Law, by Charles Gielen (NautaDutilh) and Verena von Bomhard (Lovells), is published by Wolters Kluwer Law & Business. The volume is mini-sized -- a format that is popular in parts of Continental Europe, and is part of a series of concise source books on areas of intellectual property law. Further information is available from its web page here. According to the publishers:

"Concise European Trademark and Design Law aims to offer the reader a rapid understanding of the provisions of trademark and design law in force in Europe and features:

• Article-by-article commentary on the relevant European directives and regulations in the field of trademark and design rights
• Short and straightforward explanations of the principles of law to be drawn from each provision
• Editors and authors who are prominent specialists (academics and practitioners) in the field of European and international trademark and design law".

The U.S. Patent Prosecutor's Desk Reference, by Joshua P. Graham and Thomas G. Marlow, is published by Oxford University Press's New York division. According to the web-blurb,

" ... There is a need for a quick reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments. ... [This book] provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO. Each section of this reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses.

This desk reference cites five different authority sources: statutes that govern the granting of patents; the Manual of Patent Examining Procedure, Eighth Edition which dictates how examiners determine whether a patent application should be allowed; decisions by the Board of Patent Appeals and Interferences which is the administrative body of the U.S. Patent and Trademark Office that reviews decisions made by the examiners; the U.S. Court of Customs and Patent Appeals which was the body that reviewed decisions made by the Board of Patent Appeals and Interferences until the Federal Circuit came into existence in 1982; the U.S. Court of Appeals for the Federal Circuit which is now the body that reviews decisions made by the Board of Patent Appeals and Interferences. ...".

Fan Fiction and Copyright: Outsider works and IP protection, by Aaron Schwabach, Thomas Jefferson School of Law, and published by Ashgate (further details available from the website here).

"As long as there have been fans, there has been fan fiction. There seems to be a fundamental human need to tell additional stories about the characters after the book, series, play or movie is over. But developments in information technology and copyright law have put these fan stories at risk of collision with the content owners’ intellectual property rights.

Fan fiction has long been a nearly invisible form of outsider art, but over the past decade it has grown exponentially in volume and in legal importance. Because of its nature, authorship, and underground status, fan fiction stands at an intersection of key issues regarding property, sexuality, and gender. In Fan Fiction and Copyright, author Aaron Schwabach examines various types of fan-created content and asks whether and to what extent they are protected from liability for copyright infringement. Professor Schwabach discusses examples of original and fan works from a wide range of media, genres, and cultures. From Sherlock Holmes to Harry Potter, fictional characters, their authors, and their fans are sympathetically yet realistically assessed.

Fan Fiction and Copyright looks closely at examples of three categories of disputes between authors and their fans: Disputes over the fans’ use of copyrighted characters, disputes over online publication of fiction resembling copyright work, and in the case of J.K. Rowling and a fansite webmaster, a dispute over the compiling of a reference work detailing an author's fictional universe. Offering more thorough coverage of many such controversies than has ever been available elsewhere, and discussing fan works from the United States, Brazil, China, India, Russia, and elsewhere, Fan Fiction and Copyright advances the understanding of fan fiction as transformative use and points the way toward a “safe harbor” for fan fiction".

The ECJ interpreted Article 6(1) of Directive 2006/115, which allows Member States to derogate from the exclusive rights provided in respect of ‘public lending’, provided that authors receive a remuneration, holding that such remuneration cannot be purely symbolic and must be determined on the basis of the number of both the works made available and of the users of the public establishment suitable for the lending.

Legal context

The concept of lending is clarified in Article 2(1)(b) of Directive 2006/115 as ‘making available for use … when it is made through establishments which are accessible to the public’. Article 3(1)(a) inter alia gives authors the right to authorize or prohibit the lending of their works. Lending is not a lucrative activity as it should be carried out ‘not for direct or indirect economic or commercial advantage’ of the person to whom the lending right is granted (Article 2(1)(b) of the Directive). For example, a public library may wish to offer book-related services, and in particular to lend books to people to read outside the library, eg at home, for a certain period of time. In order to do that, the public library should obtain from the author or the person to whom the lending right has been granted a specific authorization. Such lending activity, not being lucrative, cannot give the library an economic benefit which goes beyond that which is necessary to cover the operating costs of the establishment (Recital 11 of the Directive).

In this case, the ECJ interpreted Article 5(1) Directive 92/100 (now Article 6(1) of Directive 2006/115, to which subsequent reference is made). This provision allows EU Member States to derogate from the exclusive rights offered to authors in respect of ‘public lending’, provided that authors themselves receive remuneration. Member States are free to quantify the amount of such remuneration, taking into consideration their cultural promotion objectives. Member States can thus take advantage of this provision by allowing public establishments to make available to the public a wide range of works (eg books) without requesting any authorization from the author (so long as remuneration is paid to the latter). The rationale behind this proviso is to incentivise and promote the diffusion of culture. Paragraph 3 of Article 6(1) of the Directive provides that Member States may exempt certain categories of establishment from the payment of the remuneration.

These provisions had been implemented in Belgium by the Law of 27 July 1994 on copyright and related rights and by the Royal Decree of 25 April 2004. In particular, Articles 23(1) and 47(1) of the Law provide that the authors cannot prohibit the lending of their works when such loan is organized for education and cultural purposes by public institutions and by organizations officially recognized for that aim by public authorities; however, authors must receive remuneration for the loan of their works (Article 62(1)(2) of the Law). As for quantification, according to Article 4(1)(2) of the Royal Decree, the quantum is fixed on a flat rate basis at € 1 per year and per adult and at € 0.5 per year for each minor. The quantification is therefore based exclusively on the number of borrowers annually registered to the lending institutions. Article 4(3) of the Decree also specifies that, if a person is registered to more than one lending institutions, the amount of remuneration must be paid only once.

Facts

This reference to the ECJ originated from the request for annulment of the Royal Decree made by Vewa, the Belgian copyright management society, before the Belgian Council of State (Raad van State). According to Vewa, the Royal Decree contravened the provisions of the Directive on remuneration. The Belgian Council of State decided to stay the proceedings and referred the case to the ECJ and asked that court whether Article 6(1) of the Directive prevents the fixing of remuneration the amount of which is exclusively based on the number of borrowers of the works.

Analysis

The ECJ focused its attention on three main issues: (i) who should pay the remuneration, (ii) how much they should pay, and (iii) the criteria of quantification.

Who should pay the remuneration?
The ECJ first noted that it is the making available of works by the public establishment, and not the actual loan of specific works by the persons registered with such establishment that triggers the obligation to pay the remuneration due to the authors. It follows that the remuneration should be paid by the public establishment in question (paragraph 23, ECJ ruling). The validity of this conclusion, stressed the Court, is implicitly buttressed by Article 6(3) of the Directive, which permits Member States to exempt specific categories of lending establishments from the obligation to pay the remuneration (paragraph 24).

The amount of the remuneration
The ECJ first cited its earlier ruling in Case C-245/2000 Sena. There it had interpreted the concept of ‘equitable remuneration’, referred to in another part of the Directive (Article 8(2)) regarding performers and phonogram producers’ rights. There it held that the amount of the equitable remuneration should be quantified in light of the commercial value of the use of the copyright work (paragraph 32). Yet the remuneration to be paid to authors in case of public lending is different from that referred to in Article 8(2) since public lending does not have a commercial value, neither direct nor indirect and the amount of the remuneration cannot therefore be based on the commercial value of the protected work, but should be lower (paragraph 33). However, the Court noted, the amount must nonetheless be capable of allowing authors to receive an adequate income and thus cannot be merely symbolic (paragraph 34).

The criteria for quantifying the remuneration
Which are the criteria to be taken into consideration when it comes to quantifying the amount of the remuneration?

The ECJ first noted that Member States have a wide range of discretion in determining the remuneration and that regard should be had to their cultural promotion objectives (see Article 6(1) of the Directive and paragraphs 35 and 36 of the ECJ decision). Despite this freedom, the Court clarified that the amount of the remuneration to be given to the author cannot fail to take into consideration the harm suffered as a consequence of the lending of his works. It follows that such remuneration should take due account of the extent to which those works are made available to the public (paragraph 37).

The ECJ thus held that not only a criterion based on the number of borrowers but also an ‘objective’ parameter should be relevant in this specific regard. As previously mentioned, the first criterion is based on the number of borrowers annually registered to the lending institutions: the greater the number of persons accessing to the copyright works, the greater will be the prejudice to authors’ rights and the amount of the remuneration (paragraph 39). Yet this is not enough. The number of copyright works made available to the public by a lending establishment should also be taken into consideration: the higher the number of copyright works made available to the public, the greater will be the prejudice suffered by authors (paragraph 38).

It follows that the amount of the remuneration is too low in Belgium, where a criteria based only on the number of borrowers has so far been used for quantification. The low level of remuneration in that country is also a consequence of the application of Article 4(3) of the Belgian Royal Decree which states that, where a person is registered with a number of establishments, the remuneration should be paid only once in respect of that person. As mentioned by the Belgian collecting society Vewa in the proceedings before the ECJ, a large number of persons registered with the lending establishments in the French-speaking part of Belgium are also registered with other analogous establishments and accordingly a large number of readers are not taken into consideration when quantifying the remuneration to be paid to the authors (see Article 4(3) of the Belgian Royal Decree, ECJ paragraph 41). Under these circumstances, this scenario may lead to the result that many establishments are de facto exempted from the obligation to pay the remuneration: this makes its total amount low and is also contrary to Article 6(3) of the Directive. This provision had been interpreted by the ECJ in Commission v Spain (Case C-36/05, paragraph 32), where it was held that only a limited number of categories of establishment potentially required to pay the remuneration can obtain the exemption from this obligation (see also paragraph 42, ECJ decision).

Practical significance

The immediate consequence of this ruling is that the Belgian provision on remuneration in case of derogation of public lending rights is against EU copyright law and should therefore be modified by following the guidelines given here by the ECJ. If it is based on just the number of borrowers, the remuneration to be paid to authors is too low and does not justly compensate authors for the unauthorized use of their works through public lending.

Another consequence of the finding that the remuneration is also to be based on the number of the works made available is that large public lending entities will pay in future a higher sum than smaller establishments (paragraph 38).

Wednesday, 10 August 2011

Online subscribers to the Journal of Intellectual Property Law and Practice (JIPLP) will be delighted to learn that the September 2011 issue is available in full from the journal's website. The contents of this issue are accessible by all, at no cost, here. A further 15 features can be read via the journal's Advance Access service, here, by subscribers at no extra cost and by non-subscribers on a pay-to-read basis.

The September editorial raises a delicate issue -- paying for IP information in an era in which we expect free access. You can read it in full below:

"But who will pay?

I have recently received two appeals for funds from organizations which, in their separate ways, have greatly enriched the international IP community. Their lack of financial stability is not unique and reflects a larger problem which IP practitioners and their clients will do well to consider before they—and not the institutions in question—become the true victims.

The first appeal comes from Intellectual Property Watch, the Geneva-based information service and weblog which, for many of us, is the first port of call for all current issues facing WIPO, the World Trade Organization, the World Health Organization as it tackles live topics such as global health, the environment, east-west and north-south trade, bilateral and plurilateral relations between trading nations, diplomatic crises, administration, and budgeting.

While Intellectual Property Watch is too discreet to admit it, this service is more than a means by which a geographically distant world views goings-on in Geneva; it is also a means by which ideas, ideals, attitudes, and proposals can be aired, information circulated, and soundings taken off the record. And while its head William New is too modest to proclaim it, his service's accuracy and reliability make it a widely respected source of IP activity.

The second appeal comes from the British and Irish Legal Information Institute (BAILII), which provides access to a vast online compendium of British and Irish primary legal materials. BAILII is part of a network of primary legal databases which cooperates under the aegis of the World Legal Information Institute to offer a remarkable 1166 legal databases of information drawn from 123 jurisdictions. Among databases frequently referred to in this journal are those of the Patents Court and Patents County Court for England and Wales, from which handsomely produced records of decisions are accessible online often within minutes of their having been published.

IP Watch and BAILII have each replaced an inefficient, unsearchable, and generally paid-for ragbag of a system (if system it could properly be termed). The former charges minimally for some of its services, providing the rest of its content at no cost. The latter makes no charge at all.

As a community, we IP lawyers, clients, teachers, and students have become increasingly used to free access and it is difficult to break the habit. Yet the availability of these services has greatly improved our own efficiency and, with it, our ability to take better control of our work routines and, with it, our lives. A new generation of young businessmen, legal professionals, and students is emerging, information consumers who will never know the inconveniences of books borrowed from library shelves and not returned or, almost worse, wrongly returned; of the pain of delay when waiting for the arrival by terrestrial mail of a replacement copy of a lost-in-transit journal issue or loose-leaf supplement; of having to read through the entirety of non-searchable documents and having to leave one's desk in pursuit of further references which now we casually click through as hyperlinks.

The prospect of losing information services such as these is unthinkable. Yet how should they be funded? In the short term, it would do little harm to bully their users into making a donation. If each user donated, each year, the value to his benefactor (in charge-out or quality of life terms) of just one hour of his working week, neither of these impoverished benefactors of our daily work routine would ever need go cap-in-hand again. Yet in the long term, any solution must be based on sound commercial principles.

All providers of online legal information, in specialist areas like IP and beyond, are asking themselves about the basis of their businesses. Blogging and individual content-providing websites have helped shake legal authors from the tyranny of legal journals demanding large subscriptions in respect of information and comment for which authors were generally not paid, the content often coming out in monthly or quarterly issues, sometimes months or years after that information was first sought by readers. Now authors can reach readers directly and interact with them. Publishers of law books are also asking where their profits will come from, now that purchasers are less willing to purchase stale texts padded with paid-for statutes and other materials which are available free on the internet.

The battle to find good working business models that users will pay for goes on. It may be as long as 10 years before a new pattern emerges, since popular old-style titles will be slow to die even when the new emerge and are offered side by side with them. When the smoke clears, we shall see who wins, who survives—and who pays".

Friday, 5 August 2011

JIPLP has just welcomed a new team member -- Danielle Northcott, who joins us as a Publishing Assistant. Danielle has two pieces of fresh news for subscribers:

A new QuickSearch widget is going to be provided at the top of column three on the contents page (which currently looks like this). This widget will enable users quickly to enter a search rather than having to click through to the "Search this journal" facility on the journal's homepage (here) [there's no truth in the rumour that this is to renamed SlowSearch -- it's still pretty nippy!]. The QuickSearch widget is a usability improvement which will make it significantly easier for users to run a search on the site. At present, approximately 5% of users perform a search; Oxford University Press will be monitoring the impact of the QuickSearch widget in terms of increased search usage. This change will be automatically implemented on 1 September.

A "Most Read and Most Cited" widget will be added to the bottom of column three of JIPLP's content pages. This, as its name suggests, will afford users quick access to the most read and most cited articles. This innovation will also be automatically implemented on 1 September.

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Here are some more articles in search of authors. If you'd like to write on one of these topics, email Content Commissioning Editor Sarah Harris at sarah.harris@oup.com and let her know. Guidance for authors can be found on the JIPLP website here.

"Fluid trade marks": what are they and how best can they be protected?

How can internet service providers fashion a simple, effective and user-friendly intellectual property policy?

A summary of the current position regarding evidence of genuine use of an earlier trade mark in European law

Injunctive relief for patent infringement in the Unitef States post-eBay v MercEchange: how much has changed?

Disposing of databases: due diligence and other practical issues.

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Here are some writing errors that I've been having to deal with quite a lot recently. Do please try to avoid them: they're usually easy to spot if you re-read your articles and Current Intelligence notes before you submit them:

1. Slipping between the past and the present tense: please do this only if you are contrasting things that happened in the past with things that are still happening. Also, descriptions of the facts of cases should not be written in the historical present. It is odd to read "The plaintiff is the owner of the BINGO trade mark, under which it manufactures and markets widgets" when the trade mark was cancelled in 2005 and the plaintiff ceased trading in 2007.

2. Inconsistency between singular and plural. This problem particularly plagues nouns that have a collective element to their meaning, for example, 'company', 'committee', 'government', 'collecting society". It is not uncommon to receive sentences that run like this:

"The company were seeking to register as a Community trade mark the sign which it was using on both domestically-manufactured products they were making and those it imported from a manufacturer outside the European Union".

3. Do please remember that not every reader is on the writer's wavelength. I recently received a submission for publication of a Current Intelligence note on a court concerning the validity of a patent which didn't actually contain the word "patent" anywhere: the writer assumed that the reader would know. While the assumption was probably quite correct in this case, a little assistance from the author is often welcome since validity is an issue that affects other rights as well. Equally, it helps to let the reader know which jurisdiction you're writing about (British authors are generally the worst offenders on this point!)

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr129, first published online: July 29, 2011

Accused conduct must have been the ‘but-for’ cause of issuance of a patent, or the patent will not be found unenforceable for ‘inequitable conduct’.

Legal context

In the USA, patents can be held unenforceable if the applicant did not deal candidly with the patent examiner. This is a doctrine similar to the principle of ‘unclean hands’.

Facts

In its new Therasense decision, the Court of Appeals for the Federal Circuit (‘CAFC’) tightened the standard for establishing ‘inequitable conduct’ to make a patent unenforceable. It declined to enforce the US Patent Office's disclosure rule and now requires in most instances that the accused conduct have been the ‘but-for’ cause of the patent's issuance—or there will be no remedy of unenforceability.

The CAFC's explicit motivation for a more stringent standard was to reduce the number of charges of inequitable conduct:

In the past, this court has tried to address the proliferation of inequitable conduct charges by raising the intent standard alone. …

This higher intent standard, standing alone, did not reduce the number of inequitable conduct cases before the courts and did not cure the problem of overdisclosure of marginally relevant prior art to the PTO. To address these concerns, this court adjusts as well the standard for materiality’ [Therasense, 2011 WL 2028255 at *11].

Analysis

The trial court's recitation of the misconduct committed by the patent applicant lead to its finding of inequitable conduct:

The court found that Mr. Pope and Dr. Sanghera were aware of the contrary representations made to the EPO and consciously chose to withhold them from the PTO. The court carefully considered their explanations for their failure to disclose the references and found each witness's explanation to be lacking’ [Therasense, 2011 WL 2028255 at *37].

The majority opinion in Therasense departed from reasoning in Supreme Court precedent and the Federal Rules regarding the assessment of witness credibility by a trier of fact. The Supreme Court established that those with matters pending before the USPTO have an ‘uncompromising duty to report to it all facts concerning possible fraud or inequitableness’ underlying pending applications [Precision Instruments Manufacturing Co. v Automotive Maintenance Machinery Co, 324 US 806, 818 (1945) (emphasis added)].

The Panel's rejection of the trial judge's detailed findings is inconsistent with a universal rule of appellate review. ‘Findings of fact … shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of witnesses’ [Rule 52(a), Fed. R. Civ. P.]. This ‘[r]ule means what it says’—that findings of fact, even ‘those described as “ultimate facts” because they may determine the outcome of litigation’, are to be reviewed deferentially on appeal [Bose Corp. v Consumers Union of United States, 466 US 485, 498 (1984)]. An appellate court is bound to respect credibility determinations of the trial judge, according to Federal Rule 52(a). Rather than having the authority to compel the trial judge to credit any reasonable inference argued by the applicant, it is the CAFC itself that is compelled to respect the trial judge's factual choice between two permissible views of the evidence, which cannot be overturned as a ‘clearly erroneous’ choice.

With its Therasense decision, the CAFC effectively elevated the fact patterns of older Supreme Court cases to the status of the controlling test for inequitable conduct of any and all types, in disregard of the Supreme Court's most recent statements to the contrary in Precision Instruments. The Therasense ruling would permit ‘working-around’ the uncompromising standard of fully candid disclosure to the Patent Office that was established in Precision Instruments. If the Therasense ruling remains in place, district courts will be impeded from their duty to detect and deter misleading statements to the USPTO.

Practical significance

US patent practitioners are breathing a collective sigh of relief—for now—since inequitable conduct has become harder to allege and prove. However, at least one of the losing parties is petitioning the US Supreme Court for review, so this decision may not yet be the last word on unenforceability of patents for inequitable conduct.

Monday, 1 August 2011

In keeping with the journal's new regime for book reviews (click here for details), JIPLP is offering below a selection of further titles for review, as well as re-offering three titles that have not yet been claimed by prospective reviewers.

Anyone wishing to review a title should email Sarah Harris (Content Commissioning Editor) at sarah.harris@oup.com by the closing date for receipt of requests to review, indicating why that person believes him- or herself to be qualified to review it. Reviewers will be given a maximum of 60 days in which to submit their review. If you are too busy to review the book, you are too busy to receive it, so please do not offer to review a title if you are unlikely to be able to submit a review. If, having received a book for review, you realise that you cannot review it, please notify us accordingly and let us have the book back so that it can be sent to another reviewer.

From time to time, this weblog will publish a list of reviews in the pipeline together with their reviewer, so that readers can gain an idea as to what books will shortly be reviewed and, if necessary, defer their decision to purchase a book until they have had a chance to read the review.

JIPLP will endeavour to expedite the publication of reviews, making full use of the journal's Advance Access facility and by publishing a greater number of reviews on this blog.

The following three titles were advertised for review last Tuesday but have not yet been requested. Since we are now in the holiday period, the period for offering to review them has been extended to Monday 15 August:

A Practical Guide to Working with TRIPS, by Antony Taubman -- formerly of WIPO, now with the WTO and himself the contributor of a substantial book review for JIPLP. This book is published by Oxford University Press and its details are available here. While experience of having worked with TRIPS would be an ideal qualification for a reviewer, that would exclude most IP experts straight away -- but both within the professions and academe there are many people who have had an opportunity to watch, to advise and to form an opinion of TRIPS in operation.

'Expert Privilege' in Civil Evidence has been written by regular JIPLP contributor Paul England. It is published by Hart Publishing and its details can be inspected on its web page here. This title really does call for a litigation lawyer as first choice, though privilege affects non-contentious practice too.

Landmark Intellectual Property Cases and their Legacy. This intriguing title has been put together by scholars Christopher Heath and Anselm Kamperman Sanders (editors) and has been published by Wolters Kluwer Business & Law. Further particulars can be found here. A reviewer with an across-the-board interest in intellectual property and a solid academic pedigree might be best placed to review this.

We list some further titles for review below. If you'd like to review one, please email Sarah Harris by Monday 15 August:

Intellectual Property Overlaps: A European Perspective, by Estelle Derclaye and Matthias Leistner. Published by Hart Publishing, further particulars are available from the publisher's website here.

"... This book's aim is to find appropriate rules to regulate overlaps and thereby avoid regime conflicts and undue unstructured expansion of IPRs. The book studies the practical consequences of each overlap at the international, European and national levels (where the laws of France, the UK and Germany are reviewed). It then analyses the reasons for the prohibition or authorisation of overlaps. This analysis enables the determination of criteria and principles that can be used to (re)map the overlaps to achieve appropriateness and legitimacy".

EU Intellectual Property Law, by Trevor Cook (Bird & Bird). This volume is published by Oxford University Press. Further details are available from the website here. According to the publisher, "European Union law affects the law of intellectual property in two main ways. The first is under EC Treaty provisions on non-discrimination, free movement of goods (in relation to parallel imports) and principles of competition law (in relation to licensing of IPRs or refusal to grant such licenses). A significant part of this book deals with those aspects of Community law that are common to most intellectual property rights across the EC, including the effect of the EC treaty on national intellectual property rights, limited harmonisation of those rights in some areas, and how EU law impacts on enforcement".

Cultural property law and restitution: A commentary to international conventions and European Union law, by Irini A Stamatoudi, and brought out by Edward Elgar Publishing. This book's website contains further information here. According to the publisher,

"Theories of cultural nationalism and cultural internationalism and their founding principles are explored. Irini Stamatoudi also draws on soft law sources, ethics, morality, public feeling and the role of international organisations to create a complete picture of the principles and trends emerging today".

Authored by lawyer, blogger and IP enthusiast Peter Groves, A Dictionary Of Intellectual Property Law is a jolly romp through some of the terms we take for granted in our daily IP activities, as well as some obscure curiosities that we may dread to encounter. Published by Edward Elgar Publishing, the book's web page is here:

"With over 1000 expressions defined clearly and entertainingly, this book should be the first reference point to understanding intellectual property terminology. It will be particularly helpful to practitioners when they encounter expressions they have not seen before which they need to understand the true meaning and definition of. Students finding unfamiliar terminology and concepts will also appreciate the instant explanation available from this essential resource".

Science, colonialism, and indigenous peoples: The cultural politics of law and knowledge, is published by Cambridge University Press and authored by Laurelyn Whitt. The book's web page contains further information here. According to the publisher,

"At the intersection of indigenous studies, science studies, and legal studies lies a tense web of political issues of vital concern for the survival of indigenous nations. Numerous historians of science have documented the vital role of late-eighteenth- and nineteenth-century science as a part of statecraft, a means of extending empire. This book follows imperialism into the present, demonstrating how pursuit of knowledge of the natural world impacts, and is impacted by, indigenous peoples rather than nation-states. In extractive biocolonialism, the valued genetic resources, and associated agricultural and medicinal knowledge, of indigenous peoples are sought, legally converted into private intellectual property, transformed into commodities, and then placed for sale in genetic marketplaces. Science, Colonialism, and Indigenous Peoples critically examines these developments, demonstrating how contemporary relations between indigenous and Western knowledge systems continue to be shaped by the dynamics of power, the politics of property, and the apologetics of law".

Reviewers who are currently holding books. Here is a message for the large number of reviewers who are currently in possession of unreviewed books for which the review date is now substantially overdue: can you please contact JIPLP and let us know either (i) how you are progressing with your reviews or (ii) whether you still propose to review the book. Not hearing from you is frustrating for us and makes it difficult for us to plan the content of our journal since, the later a review is received, the greater is the imperative to get it into print while it still has some currency.

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About this weblog

The principal contents of this weblog are drawn from the Current Intelligence features which are published monthly in JIPLP.

Current Intelligence articles are designed to analyse recent key cases, legislation and topical matters. Normally they are of between 500 and 1,500 words (though in exceptional cases a greater word length may be agreed with the Editor).

The selected Current Intelligence articles are now posted on this weblog to enable readers to engage with them, posting comments if they so choose. All comments are moderated, which means that they will not appear immediately upon their being posted.

About the Journal

JIPLP is a peer-reviewed journal dedicated to intellectual property law and practice. Published monthly, coverage includes the full range of substantive IP topics, practice-related matters such as litigation, enforcement, drafting and transactions, plus relevant aspects of related subjects such as competition and world trade law.

The journal is specifically designed for IP lawyers, patent attorneys and trade mark attorneys both in private practice and working in industry. It also aims to be an essential source of reference for academics specialising in IP, members of the judiciary, officials in IP registries and regulatory bodies, and institutional libraries. Subject-matter covered is chosen for its practical relevance and international interest.

... and authors in search of an article

JIPLP is often approached by prospective authors who would like to write something, but who would appreciate guidance regarding subject-matter, style and so forth. Here are a few pointers:

* Ask yourself what is it that you'd like to read in the journal, since that is handy rule of thumb which probably reflects the interests of your colleagues and your competitors;

* IP law and practice is very much a 'here and now' activity for JIPLP subscribers. The history of a right may be inherently interesting, or even sometimes relevant to the resolution of a specific issue, but would you expect a reader to look for it in JIPLP?

* Recycled Masters' dissertations and university essays make poor articles and are often difficult to convert from a piece that is designed to display erudition and research ability into an article that addresses lawyers, businesses and decision-makers. It's usually easier to start afresh by working out who your readers are and what you want to tell them.

* Please comply with the authors' instructions and note the journal's preferred length for articles. Most authors like to publish long ones, but subscribers tend to prefer reading shorter ones.

Peer reviewers

All substantive articles published in JIPLP are peer-reviewed. If you'd like to be considered for admission to the roll of peer reviewers, please email Jeremy Phillips (Editor) here, and either attach a short-form CV or let him know of your credentials for reviewing articles on IP-related issues.